Here’s a trademark situation I see (and businesses stumble into) all the time:
You’ve run Acme Widget in Nashville for years. A company you’ve never heard of has been running Acme Widget in Astoria, Oregon. For decades, this might have been a peaceful coexistence—until one of you puts up a website, starts shipping nationwide, or goes mildly viral on Instagram.
Trademark law grew up in a world where commerce was local. Two doctrines—Tea Rose-Rectanus and Dawn Donut—are classic examples. They’re still alive, but the internet has made them harder to rely on.
Tea Rose–Rectanus (in plain English): Trademark rights don’t travel ahead of your customers.
Tea Rose–Rectanus comes from two early U.S. Supreme Court cases that recognized a basic point: a trademark isn’t a right “in gross.” It’s tied to goodwill in a real market, and historically that meant geography.
So if Alpha Co. uses a mark in one region, and Beta LLC later adopts the same (or similar) mark in a different, truly remote region in good faith, Beta may get to keep using the mark in its own territory. The “good faith” piece is key. If Beta knew about Alpha and chose the name anyway, courts are much less sympathetic.
The Lanham Act preserves a version of this concept for certain “remote” users: if someone adopted and continuously used a mark without knowledge of the registrant’s prior use and before key federal registration dates, that can be a defense—but only in the geographic area where that prior use is proved.
Dawn Donut (in plain English): You can have a federal trademark registration and still lose a claim against a junior user in a geographically distant market.
Dawn Donut is a Second Circuit case that’s become shorthand for a practical limit on injunctive relief. The court held that even though the plaintiff had a federal registration, it wasn’t entitled to an injunction against a junior user operating only in a distinct local area—because there was no present likelihood of consumer confusion and no present likelihood the registrant would expand into the junior user’s market.
Two important nuances that get lost in the “Dawn Donut rule” soundbite: (1) It’s mainly about the remedy (an injunction), not whether the registrant has priority in the abstract; and (2) Federal registration creates constructive notice of ownership nationwide. Translation: after registration, later adopters generally can’t say, “Gosh, we had no idea you existed.”
So Dawn Donut can function like a rain check: “Not now, maybe later—if and when your markets intersect.
Times Change . . .
With modern e-commerce, markets collide like asteroids in a galactic maelstrom.
Tea Rose–Rectanus and Dawn Donut both assume something that is increasingly untrue for e-commerce: that businesses can operate in “separate trading areas” for meaningful stretches of time.
A few modern realities make “remote market” arguments harder:
- A website is not a brochure—it’s a billboard. Even a basic site can pull customers (and confusion) from anywhere.
- Shipping and online checkout erase geography. If you’ll sell to me in another state, you’re in my market (at least a little).
- Social media makes “local” brands discoverable. A “local-only” bakery with a strong Instagram presence is often not local in any practical sense.
- Search results don’t respect state lines. Consumers see both brands on the same screen, which is basically the modern version of “same shelf in the same store.”
Courts are well aware of this. And different circuits treat the “we’re in different places” argument differently. For example, the Sixth Circuit has said a plaintiff doesn’t necessarily have to prove it’s about to enter the defendant’s market to get injunctive relief; likelihood of entry is just one factor in the overall likelihood-of-confusion analysis.
Also, the “good faith remote user” concept gets thinner in the Internet age. In 1918, it was plausible that you’d never heard of a similarly named business across the country. In 2026, if you didn’t find them, a judge may wonder whether you ever bothered to look.
Practical advice for businesses (the part you actually care about) . . .
If you’re building or protecting a brand, here’s what to do with all of this:
1) Don’t name your business or create a tagline/logo like it’s 1959.
Before you commit to a mark, do more than a quick Google. Check the USPTO database, major platforms, and social handles. If you can find an earlier user in five minutes, so can a court.
2) Register early if the brand matters.
Federal registration brings real advantages, including nationwide constructive notice. It won’t prevent every conflict, but it changes the conversation in a dispute—especially with later adopters.
3) If you’re “local,” be honest about whether you’re actually local.
Do you ship? Run ads outside your area? Offer Zoom services? Rely on online bookings from out-of-state customers? Those facts can quickly turn a “remote market” story into an “overlapping channels” story.
4) If you discover a same-name business elsewhere, don’t ignore it.
Sometimes coexistence is copacetic. Sometimes it’s a ticking clock. A short legal assessment early (and maybe a coexistence agreement) is usually cheaper than rebranding later when you’ve built goodwill.
5) If you’re the junior user, don’t bet the company on geographic remoteness.
Even when Dawn Donut helps in some courts, it’s not a universal shield. And if you adopted the mark after the other party’s federal registration, the “we didn’t know” defense is a tough sell.
Bottom line . . .
Tea Rose–Rectanus and Dawn Donut are reminders that trademark law cares about real-world consumer perception, not just who filed first. But in the internet age, consumer perception forms nationally—and fast.
If your brand is visible online (and whose isn’t?), assume you’re playing on a bigger field than your zip code. That assumption will save you money, headaches, and at least one unpleasant letter from someone else’s trademark lawyer.
With special thanks to Morgan Wolf (Belmont Law ’27) for her research and drafting assistance
